Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Birgit Clark, Merpel, Jeremy Phillips, Eleonora Rosati, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

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Wednesday, 21 August 2013

If you’re travelling
to the West Coast of the United States this summer, you will find plenty of fun
for everyone: from the wonders of Muscle beach in Venice to the high-tech
campuses in Silicon Valley, you can grab a bite at a '50s original diner, and
you may if you fancy it, pick up a jar of Nugtella, the hazelnut
spread infused with hash oil (nb nug refers to a high quality marijuana, not
a chicken nugget).

For
the latter, all you need is a California medical marijuana card. While this new food product might seem an astonishing
mix to many, its content is not illegal per
se. Since 1996, medical marijuana can be legally purchased if you have a
prescription by a doctor and these Nugtella jars produced by Organicares are being
sold legally in Medical marijuana dispensaries in California.

News commentators are reporting on the incredible nature of
this product and at least acknowledge that Ferrero the producer of Nutella, is
not involved at all. However, the trade mark lawyer cannot help but counting
the possible claims for a cause of action. For example, Section 43(a) of the
Lanham Act proscribes the "false designation of origin through the
wrongful use of another’s trade mark" and courts will look at the following
factors: strength of the plaintiff's mark, the degree of similarity between the two
marks, the proximity of the products, the likelihood that the prior owner will
bridge the gap, actual confusion, and the reciprocal of defendant's good faith
in adopting its own mark, the quality of defendant's product, and the
sophistication of the buyers.

Did these cats abuse Nugtella ...?

In this case, Nutella is a famous mark, not only does the Nugtella packaging resemble the
original Nutella - the jars are similar in shape and uses the familiar red,
white and black color scheme of the logo- Organicare seems to advertise its
product as the “weed nutella”.Although
there is no likelihood that Ferrero will ‘bridge the gap’ or very few likelihood
of actual confusion due to the different sales channels and prior obligation to
obtain a Doctor’s prescription -- unless
the customer has already been consuming a similar content product -- Ferrero
would have a cause of action for trademark dilution or taking unfair advantage
of its famous hazelnut spread: either under the US Lanham Act Section 43 (c) whereby
dilution by tarnishment is enforceable or under Article 8(5)CTMR whereby it is
prohibited to take unfair advantage of a well-known mark, in particular when
there is a risk of a negative image being transferred to the senior mark.

As of today, Ferrero which is notorious for protecting
its Intellectual Property rights -- much to the dismay of fans, World Nutella day came to an end last May-has not made any public comment or taken
any legal steps yet -- while the Piemontese
cat is away for August vacation, the infringing mice can play.

If you get it while supplies last, see suggested recipes
by Organicare on Instagram.Cat eating Nutella here.
Does Catnip get
cats high?